Obtaining a Grant of a Petition to Revive Just Became More Difficult

Book about Patent Law and gavel.On March 2, 2020, the U.S. Patent and Trademark Office issued a notice in the Federal Register (85 Fed. Reg. 12222), in which the Office indicated that effective immediately, it may start requiring additional information about whether a delay in seeking the revival of an abandoned application, acceptance of a delayed maintenance fee payment, or acceptance of a delayed priority or benefit claim was unintentional, particularly in cases where the lapse is more than 2 years.   

M.P.E.P. § 711.03(c)(II)(D), states:

The Office does not generally question whether there has been an intentional or otherwise impermissible delay in filing an initial petition pursuant to 37 CFR 1.137(a) or (b), when such petition is filed: (A) within 3 months of the date the applicant is first notified that the application is abandoned; and (2) within 1 year of the date of abandonment of the application.  Thus, an applicant seeking revival of an abandoned application is advised to file a petition pursuant to 37 CFR 1.137 within 3 months of the first notification that the application is abandoned to avoid the question of intentional delay being raised by the Office (or by third parties seeking to challenge any patent issuing from the application).

In the notice, the Office indicates:

The USPTO may revisit the two-year time period established in this notice for requiring an additional explanation as to whether a delay is unintentional at a future point and may adjust the time period based on an evaluation of whether a two-year time period is appropriate for requesting additional information when determining whether a period of delay is unintentional.

The notice further states that:

“[n]othing in this notice should be taken as an indication that the USPTO will only require additional information in consideration of a petition . . . filed more than two years after [the date an application became abandoned, the date a patent expired, or the due date of the priority or benefit claim].”  Instead, “[t]he USPTO may require additional information whenever there is a question as to whether the delay was unintentional.”

In view of the March 2 notice, it is reasonable to potentially expect a lengthier petition process and more back and forth with the Office in order to reinstate unintentionally lapsed patents and applications from now on.


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